Appeal 2007-0539
Application 10/264,026
(Answer 7), “[e]ven though the prior art does not specifically teach
pseudopterosins obtained from Symbiodinium spp. or other sources of non-
animal origin” (id.).
Appellants argue essentially that the “claimed compositions are novel
over the prior art in that they do not contain animal impurities . . . as the
compositions and the ingredients/compounds in the compositions are
obtained from non-animal sources and therefore it is impossible for trace
amounts of animal impurities to be present” (Br. 5). The underlying
implication here is that all the prior art compositions must contain animal
impurities, since, according to Appellants, “the only way to ensure a
pseudopterosin composition that is completely free of animal impurities is to
obtain the pseuodopterosin compounds from non-animal sources” (id. at
7-8).
It is well settled that “[t]he patentability of a product does not depend
on its method of production.” In re Thorpe, 777 F.2d 695, 697, 227 USPQ
964, 966 (Fed. Cir. 1985). Thus, the present claims merely require
compositions containing the same pseudopterosin compounds obtainable
from Symbiodinium spp., wherein the compositions are free of animal
impurities. “If the product in a product-by-process claim is the same as . . .
a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” Id.
“[I]n an ex parte proceeding to obtain a patent, . . . the Patent Office
has the initial burden of coming forward with some sort of evidence tending
to disprove novelty.” See In re Wilder, 429 F.2d 447, 450, 166 USPQ 545,
548 (CCPA 1970). Nevertheless, “when the PTO shows sound basis for
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